The Complainant is DivX, LLC of San Diego, California, United States of America represented by Kauth, Pomeroy, Peck & Bailey LLP, United States of America.
The Respondents are PrivacyP of Munsbach, Luxembourg and Gerente de Dominia, CSRUS Enterprises of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2011. On April 5, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On April 5, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 18, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2011.
The Center appointed Richard Tan as the sole panelist in this matter on May 23, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a company that creates products and provides services that involve media and technology. Its products include video compression-decompression software, commonly known as codec, that enables the distribution of content across the Internet and through recordable media. It also licenses its technology to consumer hardware device manufacturers and certifies their products to ensure the interoperable support of its encoded content.
The Complainant, previously known as DivX, Inc. was incorporated in Delaware in May 2000 under the name DivXNetworks, Inc. , which it later changed to DivX, Inc. In 2010, DivX, Inc. changed its name to its present name, DivX, LLC, when it merged into Siracusa Merger LLC.
The Complainant maintains and uses the trademark DIVX and has registered a family of such DIVX trademarks around the world. The trademark DIVX was first used on September 1, 1999, and was first used in commerce on January 15, 2000. The trademark DIVX has been registered as a trademark in used in at least 32 countries in the world including the United States, Argentina, Australia, Chile, Czech Republic, Egypt, Estonia, the European Union, France, Germany, Hong Kong, Hungary, India, Israel, Italy, Japan, Macao, Malaysia, Mexico, New Zealand, Norway, Poland, Republic of Korea, Russian Federation, Singapore, South Africa, Spain, Taiwan R. O. C. , Thailand, Turkey, United Kingdom and Vietnam. In addition, the Complainant has registered a trademark in the form of a DIVX logo in Brazil, China, Germany, India, the European Union and the United States.
The Complainant’s United States Registration for the trademark DIVX, issued January 7, 2003, was for on-line downloadable computer software for broadband video transfer in Class 09 and licensing of computer software in Class 35 based on an application filed on December 28, 2000.
In addition, the Complainant maintains the domain name (among others), at which it provides information about its goods and services and offers its software for download. This webpage was launched at least as early as February 3, 2001 and has been continuously available to the public since that time.
The Respondent used or uses the disputed domain name for a web page that resolves to a website that has a similar look and feel to the Complainant’s website with the promise of a “Free Download” of software to allow playback of videos. 5. Parties’ Contentions A. Complainant
The Complainant contends that the DIVX trademark is a famous mark. It argues that the DIVX trademark is an arbitrary mark for the goods on which it used; that it has been extensively used throughout the world on, among other goods and services, software and consumer electronics hardware and that the DivX codecs have been downloaded hundreds of millions of times. It contends that in 2010, it spent approximately USD3,000,000 in marketing efforts and in 2009, 2008 and 2007, its advertising expenses were approximately USD200,000, USD1. 0 million and USD700,000 respectively. Advertising expenses for the years ended December 31, 2004, 2005, and 2006, were approximately USD8,000, USD65,000 and USD506,000, respectively.
It contends that its trademark rights predate the registration of the disputed domain name . Although the WhoIs information indicates that the disputed domain name was created on or about June 29, 2001, the Complainant asserts that by that time, the Complainant had already established trademark rights in the DIVX trademark. It asserts that those rights are supported by extensive unsolicited publicity given to the Complainant including in TechTV.com, Net Economy, Video Business, Red Herring, Salon, Broadband Week, MultiChannel News and The Sector. It has provided evidence in the form of representative articles showing press coverage prior to June 29, 2001. It further contends that before June 2001, DIVX software was already well-known in the United States and worldwide. In 2001, at least two books on the topic of DIVX software were published, one in English and one in German. Given the lead time involved in bringing such books to press, the DIVX software was already well-known by 2000. By 2003 there was at least one more book published regarding DIVX software.
The Complainant accordingly contends firstly, that the disputed domain name is virtually identical or confusingly similar to the mark DIVX in which the Complainant has rights. The main difference between the two is that the letters ‘v’ and ‘i’ are reversed in the disputed domain name. The Complainant contends that the Respondent is nothing more than a typosquatter.
The Complainant contends secondly, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted any license or authorization to the Respondent to use its marks in any manner, and there is no affiliation between the Complainant and the Respondent to justify the use by the Respondent of any of the Complainant’s trademarks or any mark confusingly similar thereto.
The Complainant contends that the Respondent’s web page has pointed to and currently points to a website that copies the look and feel of the Complainant’s “” website with the promise of a “Free Download” of software to allow playback of videos. However the software for download is not authorized software of the Complainant or any other software video player. Rather, the download comprises malware meant to infect the user’s computer. It argues that such activity is fraudulent and is meant to derive an advantage from user confusion. Its use is not legitimate use and does not confer any rights upon the Respondent. It relies on decisions such as Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623. The Complainant contends that the Respondent is not only attempting to benefit from the confusion of users, but its actions further damage the reputation of the Complainant, and users that mistakenly download software from the Respondent’s website thinking that it is a legitimate download of the Complainant’s software may come to erroneously believe that the Complainant’s software is, or includes, malware. It further contends that registering and maintaining a website for malicious purpose of deceptively serving up malware is not a bona fide offering.
Further there is no evidence at any time, whether before any notice to the Respondent of the dispute or anytime thereafter, of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant also argues that there is no evidence that the Respondent is commonly known by the disputed domain name. It argues that the use by the Respondent of the disputed domain name is directed to the purpose of disrupting the Complainant’s business. The Respondent has also intentionally attempted to attract, for commercial gain and illegal purposes, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service. Such use is not legitimate, is not noncommercial, and is not fair use.
The Complainant therefore argues that based on the foregoing the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant contends thirdly, that that the disputed domain name has been registered and used in bad faith. The Complainant’s trademark rights predate the registration of the disputed domain name. At the time the disputed domain name was created on or about June 29, 2001, the Complainant had been using the DIVX trademark in commerce for nearly three years.
The Complainant argues that the panel may determine that registration in bad faith under paragraph 4(a)(iii) has been established retroactively by bad faith use: Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688; Phillip Securities Pte Ltd v Yue Hoong Leong, ADNDRC Decision DE-0900226; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (“Octogen”); Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278; Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, WIPO Case No. D2009-1313.
It also argues that in accordance with these decisions, registrants have a continuing duty to ensure that the domain name is not used in violation of another's rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. Such representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. If a party uses the domain name in the future so as to call into question the party's compliance with the party's representations and warranties, this may be deemed to be retroactive bad faith registration.
It further argues that the Respondent registered and used the disputed domain name for its website for the purpose of deceiving Internet users into believing that they were visiting the Complainant’s website and downloading the legitimate software of the Complainant, in order to maliciously cause such users to download malware instead and cause damage to the Complainant’s reputation. It argues that this constitutes bad faith registration and use. It argues that the distribution of malware through a deceptive domain name is to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and used in bad faith: Spoke Media Hodlings, Inc. v. Andrey Volkov,WIPO Case No. D2010-1303; 24/7 Real Media Inc. v. Thomas Schultz,WIPO Case No. D2009-0043.
In further argues that in addition, the Respondent is a typosquatter and that it is well settled that the practice of typosquatting is, of itself, evidence of bad faith registration of a domain name.
The Complainant therefore argues that based on the foregoing the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint. ” Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from the Respondent’s failure to comply with the Rules, “as it considers appropriate. ” While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows;WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Having regard to the evidence adduced by the Complainant in relation to its first use of the trademark DIVX on September 1, 1999, and first use in commerce around January 15, 2000, and of its reputation as demonstrated by the publicity given to it in TechTV. com, Net Economy, Video Business, Red Herring, Salon, Broadband Week, MultiChannel News, The Sector and other publications prior to the date of the Respondent’s registration or use of the disputed domain name on June 29, 2001, and having regard to the absence of any response to these assertions by the Respondent, the Panel finds that the Complainant has established rights to the trademark DIVX which predate the Respondent’s registration and use of the disputed domain name.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s trademark DIVX. The main difference between the two is that the letters ‘v’ and ‘i’ have been reversed in the disputed domain name. It accepts the arguments of the Complainant that a transposition of letters may result in a finding of confusing similarity: see GS Development Aktiebolag, Aimpoint Aktiebolag v. Aimpiont. com c/o Whois IDentity Shield/GS Development AB, WIPO Case No. D2007-0629 where it was accepted and found that in certain situations transpositional spelling may form the basis of confusing similarity. In this case, the disputed domain name is confusingly similar to the trademark DIVX. It is easy to see how the public might be easily confused particularly as the mark DIVX is distinctive, and a reversal of the letters ‘v’ and ‘i’ can be a clear source of confusion. In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights. B. Rights or Legitimate Interests
As several WIPO UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name; and that once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has contended that the Respondent registered the disputed domain name some time – a few years - after the Complainant began use of its DIVX mark; that the Respondent is not commonly known by the disputed domain name; that the Respondent has not been granted any license, authorization or other rights to use the Complainant’s mark for any purposes and that the Respondent is in no way associated or affiliated with the Complainant.
The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Indeed the latter’s use of the disputed domain name was intentionally fraudulent. The evidence adduced shows that the Respondent’s web page resolves to a website that copies the look and feel of the Complainant’s website with the promise of a “Free Download” of software to allow playback of videos. The Complainant asserts that the software for download was not authorized DivX software or any other software video player but comprises malware meant to infect the user’s computer. No evidence has been given by the Respondent to refute or rebut this assertion.
The Complainant argues that such fraudulent activity is or was meant to derive an advantage from user confusion. The Panel accepts that the use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent. Its actions will damage the reputation of the Complainant as users who download software from the Respondent’s website, erroneously thinking that it is a legitimate download of the Complainant’s software, may come to believe that the Complainant’s software is, or includes, malware. The Panel accepts the Complainant’s arguments that registering and maintaining a website for the malicious purpose of deceptively serving up malware is not a bona fide offering. The Panel accepts that the use by the Respondent was for the purpose of disrupting the Complainant’s business and to attract, for commercial gain and illegal purposes, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site.
Further, the Respondent’s behavior also constitutes “typosquatting,” by registering domain name that is close misspellings of the Complainant’s marks and domain name, which use does not constitute a legitimate business use under the Policy.
The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name.
The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant submits that the Respondent has registered and used the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent has no license or other authorization to use the Complainant’s trademark or a mark similar thereto.
The Respondent registered the disputed domain name some years after the Complainant’s mark became well-known. Absent any response or evidence to the contrary, the Panel finds that the Respondent must have known about the Complainant’s mark and business when registering the disputed domain name.
The Panel further accepts the Complainant’s contentions that the Respondent’s actions constitute typosquatting, as already noted above.
Further, absent any response from the Respondent, the Panel accepts the evidence offered by the Complainant that the Respondent has engaged in the fraudulent conduct described above. Further and insofar as it is necessary to consider this further point, the Panel accepts that registration in bad faith under paragraph 4(a)(iii) may be established retroactively by bad faith use: Eastman Sporto Group LLC v. Jim and Kenny, supra; Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision, supra; Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, supra; Ville de Paris v. Jeff Walter, supra; Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, supra.
The Panel accordingly has no hesitation in finding on the undisputed evidence that the Respondent’s registration and use of the disputed domain name was intended to disrupt the Complainant’s business, in particular by damaging the Complainant’s reputation, as a result of members of the public visiting the Respondent’s website thinking that it was related to the Complainant or its business and downloading malware instead. The distribution of malware through a deceptive domain name is to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and used in bad faith: Spoke Media Hodlings, Inc. v. Andrey Volkov, supra; 24/7 Real Media Inc. v. Thomas Schultz, supra.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: June 6, 2011
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